Wednesday, January 10, 2018

TTAB Test: Are These Two Stylized "P" Marks Confusingly Similar for Cigars?

The USPTO refused registration of the mark shown below left, finding it likely to cause confusion with the mark shown below right, both for cigars. On appeal, applicant argued that the customers for its "high-end" cigars are sophisticated and selective, and furthermore that four third-party registrations for marks containing the letter "P" demonstrate that the cited mark is weak. How do you think this came out? In re Plasencia 1865, LLC, Serial No. 87147187 (January 9, 2018) [not precedential] (Opinion by Judge Karen Kuhlke).

Of course, because the goods in the application and cited registration are identical, the Board must presume that they travel in the same channels of trade to the same classes of consumers. Applicant's argument regarding the nature of its cigars and the sophistication of its consumers was irrelevant, since no such limitations appear in the application at issue. Moreover, the was no evidence that consumers of cigars, in general, are sophisticated or careful in selecting these products, and in any event the Board must consider the "least sophisticated potential purchasers" in making its determination.

As to the marks, both include a conventional typeface that is "not particularly distinctive." The most significant distinction is the slightly different position of the letter P within the circle, but the Board found the overall visual differences to be minor. The marks are similar in pronunciation and, to the extent they have any meaning, the meanings would be the same. Any differences in how the marks are actually used - i.e, always with another trademark - are irrelevant.

The four registered marks cited by applicant different from the marks at issue in significant ways because they included design or additional lettering or words, and are not for the letter P by itself or in a design. (see opinion, page 7). Without evidence of actual use, these four registrations have no impact on the issue of the weakness of the cited mark

Applicant submitted photographs showing that two cigar brands use the term "SERIES P," but there was no evidence that the letter P has any significance or meaning in connection with cigars. The cited mark, on this record, is apparently arbitrary and therefore inherently distinctive for cigars.